Greenliant Systems, Ltd.

Trademark Trial and Appeal Board

Nov 29, 2010

No. 78724139 (T.T.A.B. Nov. 29, 2010)

Mailed:
November 29, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Greenliant Systems, Ltd.
________

Serial No. 78724139
_______

Paul A. McLean of DLA Piper LLP (US) for Greenliant
Systems, Ltd.

Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Greenliant Systems, Ltd. (“applicant”) seeks to
register the mark NANDRIVE on the Principal Register, in
standard character form, for “electronic integrated
circuits,” in Class 9.1 Applicant claimed first use of its
mark anywhere and first use of the mark in commerce at
least as early as February 27, 2007.

1 Applicant is the successor to Silicon Storage Technology, Inc.,
the original applicant. The assignment of the mark and use-based
application was recorded in the U.S. Patent and Trademark Office
on June 2, 2010, at reel 4216, frame 0821.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 78724139
2
Applicant’s specimen of use comprising a photograph of the
mark applied to the goods is displayed below.

The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, “applicant’s electronic integrated
circuits are memory storage devices which utilize NAND
flash memory technology or are flash memory drives. The
applicant’s goods are NAND drives.”2
While maintaining the position that its mark is not
merely descriptive, applicant requested that NANDRIVE be
allowed to register on the Principal Register under Section
2(f) or, in the alternative, on the Supplemental Register.
The Examining Attorney continued the refusal under Section
2(e)(1), denied registration under Section 2(f), and issued
a refusal under Section 23(c) on the ground that

2 The Examining Attorney’s Brief, unnumbered p. 4.
Serial No. 78724139
3
applicant’s mark is generic and, therefore, not registrable
on the Supplemental Register.3
Applicant attached evidence to its brief. To the
extent that it is the same as evidence previously
submitted, it is already of record as part of the
application file, and its submission was unnecessary. See
ITC Entertainment Group Ltd. v. Nintendo of America, Inc.,
45 USPQ2d 2021, 2022-2023 (TTAB 1998) (submission of
duplicative papers is a waste of time and resources, and it
is a burden upon the Board). To the extent attached
evidence had not previously been submitted it is untimely
and has not been considered.
Evidence
The Examining Attorney submitted the following
evidence to demonstrate that NANDRIVE is generic when used
in connection with “electronic integrated circuits”:
1. The definition of NAND from Wĕbopēdia
(webopedia.com):
NAND Flash architecture is one of two
flash technologies (the other being
NOR) used in memory cards such as the
CompactFlash cards. It is also used in

3 Applicant complained that the refusals to register were issued
after applicant filed a Statement of Use. On appeal, the Board
will review only the correctness of the underlying substantive
refusals. We will not consider any arguments regarding whether
the refusals are procedurally deficient based on their timing.
In re Jump Designs LLC., 80 USPQ2d 1370, 1373 (TTAB 2006); see
also TMEP § 1109.08 (7th ed. 2010).
Serial No. 78724139
4
USB Flash drives, MP3 players, and
provides the image storage for digital
cameras. NAND is best suited to flash
devices requiring high capacity data
storage. NAND flash devices offer
storage space up to 512-MB and offers
faster erase, write, and read
capabilities or NOR Architecture.

NAND flash architecture was introduced
by Toshiba in 1989.

See also the entry from IC Knowledge LLC (icknowledge.com)
defining NAND as “a type of flash memory.”
2. The definition of “drive” from Bartleby.com
derived from The American Heritage Dictionary of the
English Language (4th ed. 2000) providing that in the field
of computer science, the word “drive” means “a device that
reads data from and often writes data onto a storage
medium, such as a floppy disk.”
3. The definition of “integrated circuit” from
Wĕbopēdia: “Another name for a chip, an integrated circuit
(IC) is a small electronic device made of a semiconductor
material.”4
4. An except from the website of applicant’s
predecessor, recreated below, describing its “NANDrive
integrated circuit” as a solid state drive.

4 See also TechTerms.com (“an integrated circuit, or IC, is a
small chip that can function as an amplifier, oscillator, timer,
microprocessor, or even computer memory”).
Serial No. 78724139
5
NANDriveTM

NANDriveTM – 85 Series

The NANDrive integrated circuit (IC) is
a high performance, fully integrated,
embedded flash Solid State Drive. It
contains an integrated ATA Controller
and NAND Flash drive die in a multiple
package. This product is well suited
for embedded solid state mass storage
applications offering new and expanded
functionality while enabling cost
effective design.

The NANDrive is a single device, solid
state drive that is designed for
embedded systems using standard ATA/IDE
protocol. It has built in
microcontroller and file management
firmware that communicates with ATA
standard interfaces; therefore, the
device does not require additional
proprietary software such as Flash File
System (FFS) and Memory Technology
Driver (MTD) software.

A “solid state” device is defined as follows:
An electronic component or circuit made
of solid materials, such as
transistors, chips and bubble memory.
There is no mechanical action in solid
state devices, although an unbelievable
amount of electromagnetic action takes
place within.

For data storage, solid state devices
are much faster and more reliable than
mechanical disks and tapes, but are
more expensive.5

5 The Computer Glossary, p. 367 (7th ed. 1995). The Board may
take judicial notice of dictionary evidence. University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 78724139
6
A “solid state disk” is “a disk drive made of memory
chips used for high-speed data access. … See flash disk.”6
A “flash disk” is “a solid state disk made of flash
memory. It emulates a standard disk drive in contrast with
flash memory cards, which require proprietary software to
make them function.”7
“Flash memory” is “a memory chip that holds its
content without power.”8
5. An excerpt from WiseGeek (wisegeek.com) entitled
“What are NAND Hard Drives?” According to the author,
“NAND (Not And) hard drives are very fast, high-capacity
solid-state flash memory drives.”
6. Stories/news articles referencing NAND drives as
solid state flash memory drives.
a. The Tech-FAQ (tech-faq.com) describing NAND
drives as “high-capacity, high-speed, solid-state flash
memory drives.” According to the author, the term “NAND”
refers to the architecture of the chip;
b. ComputerWorld (computerworld.com) has the
following quotation: “NAND … is a type of solid-state,
flash memory technology”;

6 Id.
7 Id. at 151.
8 Id.
Serial No. 78724139
7
c. Two articles from EE TIMES ONLINE
(eetimes.com) have the following quotations: “NAND flash
devices are solid-state memories with no moving parts,
relying instead on storing small amounts of electric charge
in semiconductor transistor structures” and “NAND-based-
solid-state drives”;
d. “Outlook: Seven New Developments That Will
Define 2007,” Backbone (backbonemag.com) has the following
quotation: “NAND drives will replace hard drives”;
e. PCWorld (pcworld.com) has the following
quotation: “flash hard drives are also known as ‘NAND
drives’”;
f. Daily Tech (dailytech.com) and Slippery
Brick (slipperybrick.com) discuss INTEL NAND drives;
g. engadget (engadget.com) reviews the new
Samsung laptop computer featuring a NAND drive;
h. GIZMODO (gizmodo.com) announcing the
introduction of a NAND drive by SanDisk;
i. “NAND drive rides PCIe” regarding solid-
state drives,” Interconnects (interconnects.blogspot.com);
j. KickStartNews (kickstartnews.com) reviewing
NAND drives;
k. “Toshiba Begins Mass Production of MCL NAND
Solid State Drives: 128 GB MCL NAND Drive is the Largest
Serial No. 78724139
8
Capacity SSD to be Featured In a Notebook PC,”
Semiconductor International (semiconductor.net); and
l. “Startup Unveils NAND-based Storage Drive,”
HPC Wire (hpcwire.com).
Whether NANDRIVE is generic?
When a proposed mark is refused registration as being
a generic term, the examining attorney has the burden of
proving genericness by "clear evidence" thereof. See In re
Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir.
2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
The critical issue is to determine whether the record
shows that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods in question. H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re
Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
Serial No. 78724139
9
that genus of goods or services?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); Merrill
Lynch, 4 USPQ2d at 1143.
Finally, where, as here, the mark is a compound term,
the examining attorney may establish that the term is
generic by producing evidence that each of the constituent
words is generic, and that the separate words retain their
generic significance when joined to form a compound that
has “a meaning identical to the meaning common usage would
ascribe to those words as a compound.” In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir.
1987) (SCREENWIPE held generic as applied to premoistened
antistatic cloths for cleaning computer and television
screens); see also TMEP §1209.01(c) (i).
We begin by finding that the genus of goods at issue
in this case is adequately defined by applicant’s
identification of goods, namely, “electronic integrated
circuits.” Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness
inquiry focuses on the description of [goods or] services
Serial No. 78724139
10
set forth in the [application or] certificate of
registration”). As displayed above, the excerpt from the
website of applicant’s predecessor submitted by the
examining attorney illustrates that the goods in this genus
(i.e., electronic integrated circuits) include high-speed,
solid state flash memory drives.
The NANDrive integrated circuit (IC) is
a high performance, fully integrated,
embedded Sold State Drive. … The
NANDrive is a single device, solid
state drive for embedded systems using
standard ATA/IDE protocol. It has
built in microcontroller and management
firmware that communicates with ATA
standard interfaces …

A “microcontroller” is “a control unit on a single
chip.”9 A “controller” is “an electronic circuit board
or system that controls a peripheral device.”10 The
website identifies applicant’s NANDRIVE as an
electronic integrated circuit.
To support its position that NANDRIVE is not a
generic term, applicant submitted 132 references to
NANDRIVE from the LexisNexis database, all of which
reference applicant. However, many of those articles

9 The Computer Glossary, pp. at 241 and 248.
10 Id. at 78.
Serial No. 78724139
11
refer to the NANDRIVE “as an integrated multi-chip
package” and “solid state drive.”11
That electronic integrated circuits include NAND flash
memory is further supported by the definitions of the terms
used to describe NAND drive devices.
“Flash memory” is “a memory chip that holds its
content without power.”12

“Flash disk” is defined as “a solid state disk made of
flash memory. It emulates a standard disk drive in
contrast with flash memory cards, which require
proprietary software to make them function.”13

“Solid state” means “an electronic component or
circuit made of solid materials, such as transistors,
chips and bubble memory.”14

Because Section 7(b) of the Lanham Act bestows upon
the owner of a registration the presumption of use of a
mark for all goods identified in a registration, the
question of registrability must be determined by
considering any goods falling within the literal scope of
an identification, and not merely the particular goods an
applicant may be marketing at the time when registrability
is determined. In re Reed Elsevier Properties, Inc.,

11 Declaration of Paul A. McLean. Applicant also submitted a list
of Internet search results for the term NANDRIVE. Although the
information in the list was truncated, applicant’s NANDRIVE was
identified as an integrated circuit and/or a solid state device.
12 The Computer Glossary, at 151.
13 Id.
14 Id. at 367.
Serial No. 78724139
12
77 USPQ2d 1649, 1654 (TTAB 2005). Accordingly, we find
that “electronic integrated circuits” encompass solid state
flash memory drives and, as such, the category of goods at
issue includes solid state flash memory drives. In other
words, while the broad category of goods in the present
case may be electronic integrated circuits, there is a
narrower category of solid state flash drives within that
broad category. See In re Wm. B. Coleman Co., 93 USPQ2d
2019 (TTAB 2010) (lighting fixtures is a generic term for
electric candles); In re Reed Elsevier Properties, Inc., 77
USPQ2d at 1656 (“the genus of services is providing a web
site with a database of information covering the identified
topics of law, legal news and legal services and that
includes information about lawyers and information from
lawyers”); In re CyberFinancial.Net Inc., 65 USPQ2d 1789
(TTAB 2002) (BONDS.COM is generic for “providing
information regarding financial products and services via a
global computer network and providing electronic commerce
services via a global computer network … with respect to
taxable and tax exempt debt instruments” because the
services encompass information about bonds); In re Web
Communications, 49 USPQ2d 1478, 1479 (TTAB 1998)
(consulting services include assisting customers in
communications through the Internet); In re Analog Devices,
Serial No. 78724139
13
Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished)
(registration is properly refused if the subject matter for
registration is generic of any one of the goods for which
registration is sought); Cf. In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting,
Application of Richardson Ink Co., 511 F.2d 559, 185 USPQ
46, 48 (CCPA 1975) (“Our predecessor court...has stated
that registration should be refused if the mark is
descriptive of any of the goods for which registration is
sought”).
We now turn to the second inquiry: the public’s
understanding of the term. As noted above, the evidentiary
burden of establishing that a term is generic rests with
the USPTO and the showing must be based on clear evidence.
Merrill Lynch, 4 USPQ2d at 1143. Based on the record
described above, we find that there is clear evidence to
support a finding that the relevant public, when it
considers NANDRIVE in conjunction with electronic
integrated circuits, readily understands that term as
identifying a type of electronic integrated circuit,
namely, a solid-state flash drive. The news stories and
articles submitted by the Examining Attorney expressly
identify NAND drive devices as solid state flash memory
Serial No. 78724139
14
drives. These examples of competitors and commentators
using the term NAND drive as a category or type of product
is persuasive evidence that the relevant consumers perceive
the term as generic. Continental Airlines Inc. v. United
Airlines Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
To counter the evidence submitted by the Examining
Attorney, applicant submitted the Declaration of Paul
McLean, an attorney representing applicant, attesting to
the facts that (1) 48 of 52 hits from an Internet search
for the term NANDRIVE referenced applicant and (2) that 132
of 132 references in a Lexis/Nexis search referenced
applicant. Applicant contends that this “is strong
evidence that the public regards the term NANDRIVE as a
trademark for Applicant’s goods.”15 We are not persuaded
because applicant’s argument is based on the false premise
that NANDRIVE and NAND drive engender different commercial
impressions.
The evidence shows common use of the term NAND drive
in the industry. Applicant’s mark NANDRIVE is simply a
compressed version of the generic terms NAND and drive.
When the terms NAND and drive are combined into the
compressed term NANDRIVE, the mark is equivalent in sound

15 Applicant’s Brief, p. 16.
Serial No. 78724139
15
and meaning to the individual terms. The individual words
NAND and drive retain their generic meanings because the
compression of the two terms is not incongruous and does
not evoke a unique commercial impression.
We also note that there is no evidence that NANDRIVE
has another meaning or would be perceived as anything other
than a reference to a NAND drive.
It is clear from the evidence that the term NANDRIVE
would be recognized as the combination of the words NAND
and drive and that this would be readily apparent to any
purchaser or prospective purchaser of applicant’s goods.
Therefore, the combination, or “telescoping,” of the terms
is immaterial to the issue before us and applicant’s
slightly misspelled version of the generic term NAND drive
does not compel a different result. In re 3Com Corp., 56
USPQ2d 1060, (TTAB 2000) (the deletion of a space between
the terms ATM and LINK does not transform the otherwise
generic term into a trademark or change the commonly
understood meaning of the term); Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (the fact
that MASSFLO is a telescoped, slightly misspelled version
of “mass flow” does not transform a generic term into a
trademark); In re Stanbel, Inc. 16 USPQ2d 1469 (TTAB 1990),
aff'd without pub. op., 925 F.2d 1480, 20 USPQ2d 1319
Serial No. 78724139
16
(Fed.Cir. 1991) (where the record established that the term
“ice pack” was a generic designation for a “nontoxic
reusable ice substitute for use in food and beverage
coolers,” applicant's asserted mark ICE PAK was held
generic and, therefore, unregistrable).
Moreover, the fact that an applicant may be the first
or only user of a generic designation or, as in this case,
a compressed version of such a term, does not justify
registration if the only significance conveyed by the term
is that of the category of goods. See In re Stanbel Inc.,
16 USPQ2d at 1472; In re Hubbard Milling Co., 6 USPQ2d 1239
(TTAB 1987)(MINERAL-LYX held generic for mineral licks for
feeding livestock); In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983)
(SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held
apt descriptive name for conducting and arranging trade
shows in the hunting, shooting, and outdoor sports products
field).
Applicant contends that “48 of 52 hits on an internet
search of the term NANDRIVE (representing 92.3% of the
hits) were references to Applicant, and that 132 of 132
references found in a LexisNexis search of the term
NANDRIVE were to applicant (which represents 100% of the
references found) … [and] is strong evidence that the
Serial No. 78724139
17
public regards the term NANDRIVE as a trademark for
Applicant’s goods.”16 We disagree. First, as indicated
above, because applicant may be the only user of the
compound term NANDRIVE, its internet and Lexis/Nexis hits
are going to be heavily skewed to articles referencing
applicant. Second, it is not clear to us how consumers
will perceive the term NANDRIVE as used in the articles.
The potential ambiguity is illustrated by March 8, 2009
article in Lab Business Week.
SILICON STORAGE TECHNOLOGY, Inc.; SST
NANDrive and SQI Flash Named Finalists
for the 19th Annual EDN Innovation
Awards

* * *

The SST NANDrive high-performance,
fully integrated embedded flash solid-
state drive is a finalist in the Memory
category, and the company’s 26 Series
Serial Quad I/O (SQI) family of 4-bit
multiplexed I/O serial interface flash
memory devices is a finalist in the
Logic and Interface IC’s category.

Due to the generic character of the term “nand drive,”
consumers are likely to perceive the telescoped term
NANDRIVE or, as used in the above reference, NANDrive,
merely as a stylized version of the generic term for
purposes of advertising. There is simply no evidence to
support applicant’s claim that consumers will perceive

16 Applicant’s Brief, p. 16.
Serial No. 78724139
18
NANDRIVE or NANDrive as a trademark or anything other than
a generic term.
Applicant argues that “NANDRIVE is capable of a double
meaning and entendre that would be recognized by the
average consumer.”17 Suffice it to say we find this
argument without any support in the record and totally
without merit.
In view of the foregoing, we find that the term
NANDRIVE is generic when used in connection with
“electronic integrated circuits.” Because the term
NANDRIVE is generic when used in connection with
“electronic integrated circuits,” it is not registrable on
the Supplemental Register or on the Principal Register
under the provisions of Section 2(f).
Mere Descriptiveness
Implicit in our holding that the evidence before us
establishes that NANDRIVE is generic for applicant’s goods
is a holding that NANDRIVE is at least merely descriptive
of applicant’s goods under Section 2(e)(1). “The generic
name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn Corp., 228 USPQ at 530.

17 Applicant’s Brief, pp. 12-14.

Serial No. 78724139
19
Acquired Distinctiveness
For the sake of completeness, we now turn to the issue
of whether applicant’s mark has acquired distinctiveness.
In finding that the designation NANDRIVE is incapable of
being a source identifier for applicant’s goods, we have
considered all of the evidence touching on the public
perception of this designation, including the evidence of
acquired distinctiveness. As to acquired distinctiveness,
applicant has the burden to establish a prima facie case of
acquired distinctiveness. See Yamaha International Corp.
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1006 (Fed. Cir. 1988).
“Applicant asserts that NANDRIVE has acquired
distinctiveness on the basis of [applicant’s] sole use of
the mark on its goods and that consumers identify Applicant
as the sole source of the goods on which the mark is
used.”18 This evidence merely demonstrates that applicant
is the only company that misspells the term NAND drive, not
that the relevant consumers of such products have come to
view the designation NANDRIVE as applicant’s source-
identifying trademark. The issue here is the achievement
of distinctiveness, and the evidence falls far short of

18 Applicant’s Brief, p. 19, referencing the Internet and
LexisNexis searches conducted by Paul McLean discussed above.
Serial No. 78724139
20
establishing this. Notably, the record contains little
direct or circumstantial evidence that the relevant classes
of purchasers of applicant’s goods view NANDRIVE as a
distinctive source indicator for applicant’s goods. For
example, applicant has used the mark for only a relatively
short time (i.e., since February 27, 2007) and applicant
has not submitted any evidence regarding the extent of its
sales, advertising, market share, or renown in the field.
Accordingly, even if the designation NANDRIVE were
found to be not generic, but merely descriptive, given the
highly descriptive nature of the designation NANDRIVE, we
would need to see a great deal more evidence (especially in
the form of direct evidence from customers) than what
applicant has submitted in order to find that the
designation has become distinctive of applicant’s goods.
That is to say, the greater the degree of descriptiveness,
the greater the evidentiary burden on the user to establish
acquired distinctiveness. See In re Bongrain International
Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4
(Fed. Cir. 1990); Yamaha Int'l. Corp. v. Hoshino Gakki Co.,
6 USPQ2d at 1005. The sufficiency of the evidence offered
to prove acquired distinctiveness should be evaluated in
light of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
Serial No. 78724139
21
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
evidence of acquired distinctiveness thus will ordinarily
be required to establish that such terms truly function as
source-indicators.
Decision: The refusal under Section 23(c) of the
Trademark Act of 1946 on the ground that the proposed mark
is generic is affirmed; the refusal under Section 2(e)(1)
of the Trademark Act on the ground that the mark is merely
descriptive and that the Section 2(f) showing is
insufficient is likewise affirmed.